Effective Trademark Searching

Goals

• Learn the purpose of doing a trademark search.

• Review trademark search tools.• Build a trademark search strategy.• Understand the limitations of a search.• Review sources for searching foreign, state

and common law marks.

What is a Trademark?

• Words• Symbols • Pictures • Sounds• Scents• Colors • Shapes• Designs

Nike

amazon.com

What Does a Trademark Do?

A trademark (or service mark) is a word, phrase, symbol, logo, design, slogan, color, shape, scent, or sound that:

1. Identifies a good or service in the marketplace

2. Indicates commercial or geographic origin

-Vidalia for onions grown near Vidalia, Georgia

3. Certifies standards or quality

- American Dental Association Certified for tooth paste, tooth brushes, etc.

Trademarks In Use

Charlie the Tuna (character trademark)

Kosher Symbol

Certification MarkTrademark

Generic Recycle Symbol

Trademark*

Why Search Trademarks?

DETECTION

Discovering trademark problems that could sink your investment.

1. Infringement of an existing registered trademark.

2. Likelihood of Confusion with an existing registered trademark.

A Tale of Two Bakeries

Bodacious Buns Bodacious Breads

Marina Del Rey, Cal.Est. 1987Trademark registered in 1988

Waldoboro, MaineEst. 1993

Applied for a trademark in 1995Changed to Borealis Breads in 1998

®Why Search Trademarks?

PROTECTION

Remember: it’s the owner’s responsibility to safeguard and enforce their trademark rights.

Defend your trademark against infringing marks.

A periodic search of new trademark applications will help you identify potential problems.

Likelihood of Confusion Test

• Sound• Appearance• Meaning• Foreign language equivalents• Similarity of goods and services• Goods can be related to services• Where/how are the goods/services sold

What’s Confusing?

Courts have objected to the following marks when used with identical or related products:

LOSER PRODUCT WINNER

Seycos Watches Seiko

Cleo Cola Soft Drinks Coca-Cola

S.O. Service Stations Esso

Toro Rojo Malt Liquor Red Bull

Ikon Camera Nikon

Oral-Angle Tooth Brushes Oral-B

Kellogg vs. Exxon

Four years ago, Kellogg sued Exxon to block the energy company from using its tiger mascot to advertise “Tiger-Mart” snacks and food.

Keep your paws off these flakes orI’ll liti-GREAT!

Confusing?

Houlihan’s Hooligans

Restaurant and bar services.

Restaurant, bar and lounge services.

Collectible dolls.

The Hooligans

Confusing?

Amazon

Computerized on line ordering service featuring the wholesale and retail distribution of books.

Chile sauce and pepper spice.

AmazonAmazon.com

Restaurant and bar services.

Pepperidge Farms vs. Nabisco

PF sued Nabisco to prevent it from introducing a snack food containing fish shaped crackers.

PF Wins!

PF wins! The court

agreed that Nabisco’s cracker was too

similar to PF’s

goldfish cracker.

Trademark Search Tools

• Goods & Services Manual (print, CD, Web)• International Class Schedule (print)• Trademark Manual of Examining Procedure -

Chapter 1400 (print, CD, Web)• Design Code Manual (print, Web)• Examination Notes (CD, Web)• Official Gazette & Annual Index (print)• Trademark databases (CD, Web)• TARR - trademark status database (Web)

Other Useful Tools

• Dictionary• Thesaurus• Geographical Dictionaries & Atlases• Foreign Language Dictionaries• Synonym/Antonym Dictionary• Rhyming Dictionary• Technical Dictionaries• Trademark/Tradename Dictionaries or

Encyclopedias

Search Outline

1. Brainstorm trademark ideas. Have 5-10+ choices before you begin searching.

2. Describe your product or service. Determine the appropriate International Class or Classes, terms and related products or services.

3. Describe your mark. Think of alternate spellings, sound and visual equivalents, design codes, etc.

4. Conduct the search. Remember to search REGISTERED, PENDING and DEAD marks.

Trademark ExampleAn invention that shields cell phone users from mutating electromagnetic energy.

Unprotected cell phone user... Becomes mutant.

Step 1 - Brainstorm Names

Cell Block Cell Shield Cell SenseSafe CellSoft CellSani-CellCanCell

C E L LBLOCK

C E L LSHIELD

Step 2 - Identify Specific Terms

• Use the Acceptable Identification of Goods & Services Manual (G&S Manual) to determine the specific term or terms that describe your product or service.

• Check for abolished terms. Trademark registrations are not updated when terms change or are deleted.– Use Flying Disc instead of Flying Saucer

for toy flying discs.

Determine Class

• In the G&S Manual, note the International Class listed with each term.

• The complete International Schedule of Classes of Goods and Services is listed on the back cover of the Basic Facts About Trademarks booklet.– Clothing is in Class 25– Beer is in Class 32– Transportation is in Class 41

Related Goods & Services

• Use the G&S Manual to identify related goods or services and their classes.

• Think in broad terms. Many products sold or used together are classed separately:– Peanut butter is in Class 29 while marshmallow topping is in

Class 30– The terms shoes, boots, sandals, sneakers and footwear

describe the same type of goods– Out-of-date terms: tonic beverage for soda– Misspellings: sirup, cofee, coffe, repellant– British terms and spellings: aluminium (aluminum), crisps

(potato chips), lorries (trucks)

Describe the Product or Service

Product Terms & Classes

Cellular telephones 9

Digital cellular telephones 9

Cell phone accessories 9

Cell phone services 38

Step 3 - Design Codes

• Use the Design Code Manual (DCM) to determine appropriate codes;

• The DCM is a numerical classification index that codifies design elements into categories, divisions and sections:01 - Celestial bodies, natural phenomena,

geographical maps

01.01 - Stars, comets

01.01.03 - Stars with five points

Multiple Design Codes

03 ANIMALS03.15 Birds, bats03.15.08 Storks, flamingos, heron and other waders03.15.19 Birds or bats in flight or with outspread wings03.15.24 Stylized birds and bats

Even simple designs often have more than one code.

Design Code Example

C E L LBLOCK

Shield

Lightning

Border

24.01.0101.15.02

26.11.07

Searching Your Mark

• If your mark includes a phrase, what are the most important keywords?– Cheeze Louise

• Is punctuation an important element? – @PLAY – Smart;)Bot

• Transpositions:– Pizza Tower = Tower of Pizza– PizzaTower = Tower-Pizza

Broaden Your Search

• Alternative spellings and homonyms:– Wooly Bear, Woolly Bear, Woollee Bare

• Words that have the same or similar meanings:– Front Row Videos = Down Front Movies

• Similar sounds or appearances:– Granola, Granulo, Granalo

– Smile = Sm:)e

• Phonetic equivalents:– Tennis Anyone? = 10-S-NE-1?

Step 4 - Search Databases

• TESS - Trademark Electronic Search System– “Live” registered trademarks and pending

applications from 1871 to the present.– “Dead” (expired, cancelled or abandoned)

marks and applications from 1984 to the present.

– About a week behind paper filings.– Updated Tues-Sat 6:30 a.m.

Cassis2

Trademarks BIB– Live U.S. trademarks from 1884 to the present– Dead U.S. trademarks from 1983 to the present– Updated bimonthly

USAMark– Facsimile images of all U.S. trademark

registrations from 1871 to the present– updated monthly

TARR

• TARR is the Trademarks Applications and Registration Retrieval system.

• Check it for the current status of the marks you found in your search.

• TARR is updated daily at 5 a.m. and contains information not found on CD-ROM, the Web or the Official Gazette.

Official Gazette

For historical trademarks not found in electronic databases check the Official Gazette, which has been published weekly since 1872; also check annual indexes.

State & Common Law Marks

There’s no requirement to search state or common law marks in order to apply for a federal trademark registration. However, doing so may save you time and money.

In 1999, Amazon Bookstore, established in Minneapolis in the 1970s, challenged Amazon’s trademark. The dispute was settled out-of-court.

State & Common Law Tools

• State trademark databases• Telephone, business and manufacturing directories• Print and on-line catalogs• Trade journals and magazines• Domain name databases• Web search engines and portals• Newspapers and newsletters• Company press releases and new product

announcements